Your HR and Payroll compliance and policy solution! Comply with federal, state, and international laws, find answers to your most challenging questions, get timely updates with email alerts, and more with our suite of products.

Jan. 24 -- When compared as a whole, there is no legal
basis that would support a jury's determination that seven “Madden” football
games created for the Sega Genesis console are virtually identical to the 1986
“John Madden Football” game that was developed for the Apple II computer, the
U.S. District Court for the Northern District of California ruled Jan. 22
(Antonick v. Elec. Arts Inc., N.D. Cal., No. 3:11-cv-01543-CRB,
1/22/14).

The court granted Electronic Arts Inc. judgment as a matter of
law on a plaintiff's breach of contract claim. The complaint alleged that all
of the Sega games--released between 1990 and 1996--were derivative works of the
1986 Apple II game that the plaintiff had developed.

In granting EA's
motion for JMOL, the court held that the jury's determination that the Sega
games were derivative works of the Apple II game, and therefore that EA
breached its contract by not paying the plaintiff royalties, was not supported
by the evidence. Indeed, a finding that the games were virtually identical
could not be supported for the simple reason that the jury never saw either the
Apple II game or any of the Sega games in their entirety, the court said.

Extrinsic and Intrinsic Tests

The jury's verdict was primarily
based on its determination that there were substantial similarities between the
expression of the source code for plays and formations. That is, the jury
determined that source code that the plaintiff, Robin Antonick, developed for
the 1986 Apple II, was infringed--with respect to the expression of plays and
formations--by the Sega games that were released later. Because the later games
were infringing, they were derivative works, and therefore Antonick was
entitled to royalties pursuant to his agreement with EA, the jury
determined.

Courts in the Ninth Circuit apply both an extrinsic and
intrinsic test to determine if two works are similar. The extrinsic test
considers the objective similarities between the protected ideas in the
copyrighted work and the work that is alleged to be infringing. The intrinsic
test is a subjective comparison of the two works through the eyes of an
ordinary observer that focuses on whether the two works, compared as a whole,
are “virtually identical.”

“Comparing the
works element by element is plainly counter to Ninth Circuit law.”

--Judge Charles R. Breyer

Works Must Be
Compared as a Whole

The problem with the jury's determination was that
it was not based on a comparison of the games as a whole, according to Judge
Charles R. Breyer. Indeed, the jury's verdict was based on its observation that
there were substantial similarities in a number of elements found in each game.
But, “Comparing the works element by element is plainly counter to Ninth
Circuit law,” the court said, noting that since at least 1993 the circuit has
required that works be compared as a whole. Quoting Apple Computer, Inc. v.
Microsoft Corp., 35 F.3d 1435, 32 U.S.P.Q.2d 1086 (9th Cir. 1994), the
court said:

If the jury's comparison of the works could be
accomplished by merely comparing each of the elements head-to-head without
considering the significance of the protected expression copied, “there would
be no point to the extrinsic test, or to distinguishing ideas from expression”
and a copyright holder could impermissibly rely on similarities in expression
resulting from unprotectable elements.

Because
Antonick never introduced any of the complete games into evidence, there was no
evidentiary basis for the jury's determination that the Sega games as whole
were virtually identical to the Apple II game, the court said. Antonick argued
that the jury's verdict was sound because it was based on the fact that the
Sega games copied the “critical” components of his code. Accordingly, the
jury's verdict is supported based on a “qualitative” comparison of the games,
even if the jury was unable to determine the specific quantity of the code that
was copied, Antonick argued.

“The Court does not dispute the proposition
that infringement can result from the significance of the expression copied
rather than the sheer quantity,” the court said. “However, this proposition
does not substitute for sufficient evidence to allow the jury to place the
protected expression--Antonick's source code for plays and formations--in the
context of Apple II Madden as a whole,” the court said.

The court
granted EA's motion for judgment as a matter of law on Antonick's breach of
contract claim. In the alternative, the court said EA was entitled to a new
trial on the issue of whether the Sega games were derivative works of the Apple
II game.

All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to books@bna.com.

Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)

Notify me when updates are available (No standing order will be created).

This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to research@bna.com.

Put me on standing order

Notify me when new releases are available (no standing order will be created)